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The Indian Patent Office has come out with a new guideline for its officials to follow when deciding on applications related to software and hardware related inventions, in place of an earlier guideline which was kept in abbeyance by the Patent office following protest from some of the IT groups. The new guideline says that if the contribution of the invention lies only in computer program, the examiner should deny the patent claim.

The groups, which raised protest against the previous guideline issued in August, 2015, hailed the new guideline, stating that this is in line with the intention in the rules that patent should not be allowed to softwares and its improvement.

As per the new guidelines for examination of Computer Related Inventions (CRIs), issued from the Office of the Controller General of Patents, Designs and Trade Marks on February 19, the examiners has to rely on three stage test in examining the CRI applications, starting with properly construeing the claim and identifying the actual contribution.

It says that if the contribution lies only in mathematical method, business method or algorithm, deny the claim.

"If the contribution lies in the field of computer program, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention," it says.

"The computer program in itself is never patentable. If the contribution lies solely in the computer program, deny the claim.

If the contribution lies in both the computer program as well as hardware, proceed to other steps of patentability," it added.

This is expected to ensure that the applications for patents in the field of software will be rejected and only applications claiming a novel hardware component along with software will be eligible for patent protection, says the advocacy groups opposing software patent in India.

The aim of the guideline is to bring in uniforminty and consistency in examination of patent applications in the field of CRIs by the Indian Patent Office. The objective is to bring out clarity in terms of exclusions expected under section 3(k) so that eligible applications of patents relating to CRIs can be examined speedily, it says.

Section 3(K) of the Patents Act 1970, as amended, says that a mathematical or business method or a computer program per se or algorithms are not inventions within the meaning of the Act. The guideline analyses what the terms mathematica, business method, computer program, per se and algorithms mean, when a patent application is examined.

The Software Freedom Law Centre (SFLC), which led the protest against the previous guideline along with iSPIRT (Indian Software Product Industry Round Table) and Knowledge Commons led a group of civil society organisations, hailed the new guideline saying that this is in line with the spirit of Section 3(K) of the Patents Act and would see software patents are not allowed in the country.

The previous guideline, according to them, suggested that some of the advancement in the software compared to the prior art could also get a patent. These guidelines were against the statutory provisions and could have resulted in a flood of patents being granted in the field of software, which would affect the Indian IT industry, especially the start ups, they said.

"This could have created a large number of patent litigations related to softwares in India," said Prasanth Sugathan,

Counsel, SFLC.

Mishi Choudhary, Executive Director, SFLC.in and Expert, Software Patent Group at ISPIRT earlier commenting on the previous guideline, said, "What they were trying to bring in was, so long as a computer program is not claimed in itself, but in a manner so as to establish the industrial applicability, and if fulfill the other criteria, the patent should not be denied".

""This Government initially with its approach towards Net Neutrality and now with its stand on Software Patents has shown that it is betting big on the innovation economy and will not let anything hinder the freedom to innovate," she said about the new guideline, in a press release.